Trade Mark Bullying

While it is of paramount importance for trade mark owners to enforce their trademark rights, ensuring that these owners do not cross-over the bridge to abusive enforcement has as much gravitas.

Very often, threats of infringement proceedings are used by large companies as a means to intimidate smaller ones, who, for time and/or lack of ability to invest in a legal battle, may give up use of the mark, though its use as such, may not be dishonest.

One such exhibit is the Warner Brothers’ policing of third-party online uses of “HARRY POTTER”. Warner Brothers purchased merchandising rights to the Harry Potter book series franchise, and went on a rampage of sending cease-and-desist notices to all internet websites that were registered using HARRY POTTER, without much assessment. Resultantly, fan-clubs were ignored and were also issued threats.

Under Indian law, there is protection provided to a person from unjustified and groundless threats of action/proceedings for infringement of a trademark. Pertinently, such a person can, himself, bring a suit against the threatening party and obtain a declaration that such threats against him are unjustified.

But, the question above all is what would constitute a threat?

Under the relevant provision of the law, the medium of communication includes, “by means of circulars, advertisement or otherwise”, thereby, evidently leaving a cloud over “or otherwise”. Judicial pronouncements, have, although, included in their interpretation, cease and desist notices, public notices, etc.

It is noteworthy that, although the law grants protection to those who become victims of such threats, the law does not define what would entail a baseless/ groundless legal threat.

Where the judiciary is concerned, it has extended its protection to infringement threats which are unjustifiable and cannot be regarded to have been made bona fide. If you are unable to demonstrate the contrary, such pre-emptive legal proceedings can provide relief to the complainant, including, (a) a declaration that the threats are unjustifiable; (b) an injunction against the continuance of threats; or (c) damages in respect of any loss sustained by the threats.

Essentially, the implication of protection under this provision is that the person threatened is entitled to come to court asking the court to adjudicate that such threats are groundless, but it does not preclude a person from instituting a suit with those allegations.

To conclude, it is important that brand owners do not navigate into the peripheries of bullying through an exaggeration of the strength of their trademark and the corresponding scope of its protection. Another facet to be mindful of is that the law exempts a legal representative, acting on behalf of his/her client, from liability, thus, it is imperative that authorization of any action be done with prudence. 

It is undeniable however, that legal notices do have a legitimate purpose, and most are sent in good faith, with only a small percentage emanating from overzealous protection. As such, aggressive threats are not reprimanded, but merely ought to be issued with reasonable caution. It is not too unimaginable that on obtaining a declaration that a threat is unjustifiable, the victim may start a deliberate negative campaign against a brand owner and tarnish the reputation that the owner was fiercely trying to protect.

Say no to BULLYING!